WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Allocation Network GmbH v. Steve Gregory

Case No. D2000-0016

 

1. The Parties

The complainant is Allocation Network GmbH a corporation organised under the laws of Germany, having its principal place of business in Munich (Hohenzollernstraße 81, 80796) Germany and represented by Dr Ph. Neuwald ("the Complainant").

The Respondent is Steve Gregory, an individual resident in Angel City (2009) Philippines , represented by David J. Loundy ("the Respondent").

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is allocation.com. The Registrar is Network Solutions, Inc. 505 Huntmar Park Drive, Hundon, Virginia 20170 Ė 5139, United States of America.

 

3. Procedural History

A complaint was submitted electronically with the World Intellectual Property Organisation Arbitration and Mediation Centre (The "WIPO Centre") on 27 January 2000. The hardcopy under cover of a letter of the same date was received on 31 January 2000 ("the Complaint"). An Acknowledgement of Receipt was sent by the WIPO Centre to the Complainant dated 31 January 2000.

On 31 January 2000 a Request for Register Verification was transmitted to the Registrar. On 3 February 2000, the Registrar confirmed by e-mail that the domain name allocation.com is registered with NSI and that the Respondent is the current registrant of that domain name. The registrar also forwarded the requested Who-Is details.

On 7 February 2000 a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") was transmitted by email to the Respondent setting a deadline of 26 February 2000 by which the Respondent could make a response to the Complaint.

On 25 February 2000 Respondent submitted via e-mail to the WIPO Centre its response ("the Response"). Respondent's response identifies himself as respondent and as the person to whom communications should be sent, confirms that Respondent is the owner of the domain name allocation.com and agrees that the dispute is decided by one member of the approved list of panellists. A hard copy has also been received by the WIPO Centre.

On 29 February 2000 Complainant submitted via e-mail, telefax and a hard copy of the confirmation copy a rebuttal ("the Rebuttal"). By email of 1 March 2000 Respondent questioned the propriety of the Rebuttal.

On 7 March 2000 the WIPO Centre sent a Notification of Appointment of Administrative and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

In a procedural decision of 13 March 2000 the Panelist allowed the Rebuttal and invited the Respondent to submit a further statement by 17 March 2000. The Panelist informed the Parties that accordingly the decision was postponed until 25 March 2000.

On March 2000 Respondent's reaction to the Rebuttal was received by e-mail ("Second Response"). A hard copy has also been received by the WIPO Centre.

 

4. Factual Background

On the basis of the documents submitted by the parties the following facts can be established as agreed between the parties or not or insufficiently disputed.

The Complainant is the owner of the registered German trademark Allocation, filed on 11 September 1998 and registered on 19 April 1999 with the German patent and trademark office for an extendable term of ten years. The trademark is registered for "computers, computer software stored on data carriers; computer programs stored on data carriers; data processing equipment; computer programs stored on data carriers for data transmission via the Internet; information on business matters; consultancy on the organization and management of business enterprises; systematic organization of computer data bases; compiling computer data bases, preparing cost price analyses, marketing, sales promotion for others; updating computer software; computer consultancy services, development, maintenance and rental of computer software, rental of data base access time, rental of data processing equipment; development, maintenance and rental of computer programs for data transmission via the Internet, operating a server for data transmission on the Internet" in the international classes 9, 35 and 42. Furthermore the trademark is registered for "advertising, provisional services in connection with narrow-band online services for information and image transmission, transmission of data, text, sound and vision, computer added transmission of information and images; provision of services in connection with narrow-band online services for the arrangements of contracts for purchase and sale of goods, offers made through computer networks in the form of data, text, vision and sound or any combination of these elements for the purchase and sale of goods and services of all kinds as well as the associated information and communication for third parties" in the international classes 35 en 42.

The Complainant has filed community trademark applications of Allocation and Allocation.com for the aforementioned services on 14 January 2000.

The Complainant is acting under the company name Allocation Network GmbH in Germany since 1997. It is operating a market place for industrial access inventory especially via the Internet.

The Complainant registered the domain names allocation.net , allocation.org and allocation.de. The homepage of the Complainant can be seen under www.allocation.net.

The Respondent registered the domain name allocation.com on 1 March 1999. After the Complaint was submitted, Respondent started using the domain name for a portal site giving access to certain categories of the Yahoo portal site.

Respondent operates a website under the domain name www.rockbottomdomains.com where he offers for sale around 400 different domain names, including the domain name allocation.com . The asking price for allocation.com is USD 25,000.

A number of these domain names are identical to registered trademarks of different trademark owners in different countries.

 

5. Applicable Rules

Paragraph 4a of the Policy directs that Complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and

(ii) Respondent has no rights or legitimate interest in respect of the domain name, and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4b of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4 (a)(iii) above.

Paragraph 4c of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent's rights or legitimate interest to the domain name for the purpose of paragraph 4 (a)(ii) above.

 

6. Partiesí Contentions

A. Complainant

The Complainant states that it uses the name Allocation through its trademarks Allocation and Allocation.com and since 1997 through its trade name Allocation Network.

The grounds for the Complaint are:

(1) the domain name allocation.com is confusingly similar to the trademarks Allocation and Allocation.com and the trade name Allocation Network in accordance with Article 4a(i) of the Policy;

(2) the Respondent has no rights or legitimate interest in respect of the domain name allocation.com as provided in Article 4a(ii) in connection with Article 4c of the Policy. Respondent does not use the domain name legitimately for providing goods and services in commerce, or in connection with an active website;

(3) the domain name allocation.com was registered in bad faith as provided in article 4a(iii) in connection with article 4b of the Policy because the domain name is offered for sale for USD 25,000. Respondent has obviously registered the domain name only for the purpose of selling it to the trademark owner or to a competitor for a price in excess of USD 25,000.

In the Complaint, Complainant requests that the ownership of the domain name in issue be transferred to it by Respondent.

B. Respondent

In its Response and Second Response, Respondent states that Complainant's trademarks Allocation and Allocation.com are not famous and do therefore not deserve a global monopoly of protection in every top level domain. Complainant uses only the trade name Allocation Network GmbH and not the trademark Allocation or Allocation.com by itself.

There is no likelihood of confusion between the trademarks and the domain name allocation.com, because they are not confusingly similar.

The domain name was not registered in bad faith. Respondent's domain name is based on a common word in the English language. All of the domain names registered by Respondent are common words, short phrases and misspellings of the same. Respondent has not intentionally registered as a domain name any trademark holderís mark in an attempt to extort money from the trademark holder by trying to sell the domain name to the trademark holder. Respondent is an entrepreneur, not a squatter.

In its Response, the Respondent has argued that it has a legitimate interest in the domain name since the domain name is currently used as the name for a portal site. In the Second Response Respondent has further argued that it has a legitimate interest because it is legitimately using the domain names as its goods and services, by offering them for sale.

 

7. Discussion and Findings

a. Identical or confusingly similar

The domain name allocation.com is clearly confusingly similar to Complainant's trademarks Allocation and Allocation.com. For the question of similarity in the context of the Policy it is not relevant whether the trademark is used, nor whether the trademark is famous. Neither is it relevant for which goods or services the trademark has been registered or that other identical or similar trademarks exist.

b. Rights or legitimate interests

Under article 4c of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Article 4(a)(ii), inter alia, by providing evidence of any of the following circumstances:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

Respondent has submitted evidence that in its opinion proves that it has such legitimate interest.

Respondentís claim that its use of the domain name allocation.com for a portal site constitutes use in connection with a bona fide offering of goods or services under Article 4c(i) should be dismissed as such use was initiated after notice of the dispute to Respondent.

It has not been disputed by Complainant that Respondent has used the domain name before any notice to it of the dispute by offering that domain name for sale.

The question to be answered is whether the offering for sale of the domain name allocation.com as such can be considered use of the domain name in connection with a bona fide offering of goods or services in accordance with Article 4c (i) on which ground Respondent would have a legitimate interest in this domain name.

Respondent has registered over 400 domain names, all of which contain or are composed of common words or short phrases from the English language or misspellings of such words. In trademark terms, many of these domain names would be considered descriptive of certain goods or services, or generic. Registration of descriptive or generic terms as a domain name is possible under the .com TLD. As the commercial value of such domain names has increased, brokers like Respondent have seized the opportunity to sell such domain names to the highest bidder. In principle, such a practice may constitute use of the domain name in connection with a bona fide offering of goods or services (i.e. the sale of the domain name itself).

The difficulty lies in the fact that the domain name allocation.com, although descriptive or generic in relation to certain services or goods, may be a valid trademark for others. This difficulty is expounded by the fact that, while ĎAllocationí may be considered a common word in English speaking countries, this may not be the case in other countries, such as Germany.

Therefore, although the registration and offering for sale of allocation.com as a domain name may constitute a legitimate interest of Respondent in the domain name, this is different if it were shown that allocation.com has been chosen with the intent to profit from or otherwise abuse Complainantís trademark rights.

Respondentís explanation that he selected many of the domain names offered for sale at random from a dictionary appears prima facie acceptable. Complainant has not disputed the fact that (many of) Respondentís domain names - including allocation.com - represent words or short phrases found in an English language dictionary.

The fact that, as Complainant has shown, a number of other domain names registered by Respondent are identical to different national trademarks from different owners is in itself insufficient evidence of the intent to profit from or otherwise abuse such trademark rights. After all, this is to be expected, in view of the territorial nature of trademark rights and the fact that, as set out above, terms which are descriptive or generic for particular goods or services and/or in a particular country may be considered valid trademarks for other goods and services and/or in a country with a different language.

Complainant has not provided any evidence of facts which might indicate that Respondent knew or should have known of its trade name use or trademark registrations, such as a direct relationship or a wide reputation of or extensive publicity in connection with Complainantís trade name or trademarks. Nor has it been shown that Respondent is in particular (also) active in the German market.

Furthermore, it does not appear likely that Respondent had such knowledge when registering the domain name allocation.com as in Germany trademark applications are not published, while in this case the German trademark registration of Allocation (which is published) was not granted until April 19, 1999, therefore after the registration of the domain name allocation.com by Respondent.

In this connection it is noted that nothing in the Policy can be construed as requiring a person registering a domain name to carry out a prior trademark search in every country of the world for conflicting trademark rights, as advocated by Complainant.

Since it is therefore not demonstrated that Respondent at the time of registration of the domain name allocation.com knew or should have known of the existence of the German trademark Allocation, there is no evidence suggesting that the domain name allocation.com has been chosen by Respondent with the intent to profit or otherwise abuse Complainantís trademark rights.

In conclusion, under the circumstances of this case, it should be held that Respondent has a legitimate interest in the domain name allocation.com in accordance with Article 4c(i) of the Policy.

c. Bad faith

Since Respondent has a legitimate interest in the domain name allocation.com, it is not necessary for the Panelist to consider bad faith.

 

8. Decision

In light of the foregoing, the Panelist decides that the Complaint is dismissed since Complainant has not succeeded in providing the evidence required by Article 4a of the Policy.

 


 

Wolter Wefers Bettink
Presiding Panelist

Dated: March 24 2000